DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of claims
Applicant’s response filed 4/13/2026 has been entered.
Independent claims 16, 27 have been amended, and introduced new ground(s).
In summary, claims 16-35 are pending and examined in the office action.
All previous objections and rejections not set forth below have been withdrawn in view of the applicant’s amendment and/or upon further consideration. See “Response to Arguments” at the end of office action. The following rejections are repeated, modified and/or added for the reasons of record as set forth in the last Office action of 12/27/2025, and/or necessitated by the applicant’s amendments. The applicant’s arguments filed 4/13/2026 have been thoroughly considered but are not deemed fully persuasive.
Interpretation of the "L1-localized trait"
According to the specification (p8, 4th para), an "L1-localized trait" is to be understood herein as a "trait localized in the L1-shoot meristem layer", which is a trait that is harbored essentially within the L1-shoot meristem layer, and is determined, at least essentially, by the genotype of the L1-shoot meristem layer, possibly together with one or more environmental factors. A trait localized in the L1-shoot meristem layer is passed to a periclinal chimera plant when using an L1-shoot meristem layer having this trait for producing the periclinal chimera plant, even if the L2 and/or L3-shoot meristem layers used for producing said periclinal chimera plant lack said trait.
Accordingly, an “L1-localized trait” is harbored essentially within the L1-shoot meristem layer. In another word, an “L1-localized trait” means that the trait is essentially (but not exclusively) located in L1 layer of the periclinal plant. Since wild species and cultivar plants are not periclinal plants, thus, L1, L2, L3 have the same genotype in wild species and cultivar plants. Thus, L2 and/or L3 layers of the resultant periclinal plant may also comprise such trait(s), unavoidably.
Claim Rejections - 35 USC § 103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or non-obviousness.
Claims 16-26 are rejected under 35 U.S.C. 103 as being unpatentable over Filippis et al (Using a periclinal chimera to unravel layer-specific gene expression in plants. The Plant Journal 75, 1039–1049, 2013), viewed with evidence from Bolger et al (The genome of the stress-tolerant wild tomato species Solanum pennellii. Nature genetics, p1034-1039, 2014), in view of Sharma et al (A Solanum lycopersicum X Solanum pimpinellifolium Linkage Map of Tomato Displaying Genomic Locations of R-Genes, RGAs, and Candidate Resistance/Defense-Response ESTs. International Journal of Plant Genomics, p1-18, 2008).
Amended claim 16 is drawn to a periclinal chimera plant comprising a first L1-localized trait of interest and a second L1-localized trait of interest, wherein the periclinal chimera is obtainable by:
(a) crossing a wild species comprising the first L1-localized trait of interest and a cultivar comprising the second L1-localized trait of interest, wherein the wild species does not comprise the second L1-localized trait of interest and the cultivar does not comprise the first L1- localized trait of interest, wherein the first L1-localized trait and the second L1-localized trait is passed to an offspring plant after crossing;
(b) selecting a first plant comprising the first L1-localized trait of interest and the second L1-localized trait of interest from the offspring plants produced by the crossing in step (a), and wherein the first plant is a F1-hybrid or an inbred plant of the cross of the wild species and the cultivar of step (a);
(c) providing a second plant not comprising both the first L1-localized trait of interest and the second L1-localized trait of interest; and
(d) making a periclinal chimera plant comprising an L1-shoot meristem layer of the first plant and the L2 and L3- shoot meristem layer of the second plant, and wherein the first and second L1-localized trait of interest is selected from the group consisting of biotic stress resistance, abiotic stress resistance, improved seed germination, fruit color and the ability to accept pollen produced by the second plant or by the plant itself.
Note: except the” biotic stress resistance, abiotic stress resistance, improved seed germination, fruit color and the ability to accept pollen” in L1 layer, the traits in all 3 layers are generic, not specific.
The claim is a product by process claim. Determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. See MPEP 2113. See In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985), which teaches that a product-by-process claim may be properly rejectable over prior art teaching the same product produced by a different process, if the process of making the product fails to distinguish the two products.
Filippis et al teach a periclinal chimera plant from grafting a cultivar plant Solanum lycopersicum and a wild-type plant Solanum pennellii (p1039, Abstract; p1046, right col, 3rd para, “EXPERIMENTAL PROCEDURES”).
Filippis et al teach that meristem that L1 layer is from wild-type plant Solanum pennellii, and L2 and L3 layers are from cultivar plant Solanum lycopersicum. L1 layer is the outer layer, L2 and L3 layers are inner layers, for both cultivar and wild-type (p1039, Abstract; p1040, figure 1).
Filippis et al teach and demonstrated some traits of L1 layer of the periclinal chimera plant, which has green fruit color trait (p1041, figure 2, far right). Thus, the L1 layer of the periclinal chimera plant of Filippis et al comprises fruit color trait.
Filippis et al does not explicitly teach or demonstrate that L1 layer of the periclinal chimera plant comprises biotic or abiotic resistant trait. However, as analyzed above, Filippis et al teach that the L1 layer of the periclinal chimera plant is from wild-type plant Solanum pennellii (p1039, Abstract).
Bolger et al provide evidence that wild-type plant Solanum pennellii comprises genes conferring tolerance/resistance to drought stress (p1036, left col, 1st para; figure 3).
Again, wild species plants are not periclinal plants, thus, L1, L2, L3 have the same genotype in wild species plants. Thus, the L1 layer of Solanum pennellii comprises trait resistant to drought stress. Since the L1 layer Solanum pennellii is the L1 layer of the periclinal plant of Filippis et al, which comprises trait resistant to drought stress.
Thus, the L1 layer of the periclinal plant of Filippis et al comprises both a fruit color trait, and a drought resistant trait that is evidenced from Bolger et al.
Accordingly, Filippis et al viewed with evidence from Bolger et al teach all of the claim structures,
except
do not explicitly the newly added limitation wherein the first plant is a F1-hybrid or an inbred plant of the cross of the wild species and the cultivar of step (a) in step (b).
Note: an inbred plant of the cross of the wild species and the cultivar read on F2 inbred progeny from the F1 hybrid.
Sharma et al teach that disease resistance traits, abiotic stress tolerance traits, and other desirable horticultural and agronomic characteristics, are identified from wild type tomato Solanum pimpinellifolium (p2, right col, 1st and last paras).
Sharma et al teach and demonstrated producing hybrid by crossing wild type tomato Solanum pimpinellifolium and cultivar tomato Solanum lycopersicum, F1 and F2 progenies were produced (p3, left col, 2.1).
Sharma et al teach and demonstrated selecting F2 progenies having desired traits including disease resistant, a specific biotic stress resistance (p3, left col, 2.1; p3, right col, 2.3 p4-5, Table 1).
Thus, the selected F2 progenies of Sharma et al comprise the same biotic stress resistance, which are from the wild type tomato. The hybrid and the wild type would substitute each other as the source of the L1 layer comprising resistance traits in the outer L1 layer. Thus, Sharma et al teach and provide motivation to make such substitution to achieve the same outcome.
Regarding dependent claims, the drought resistant trait and the fruit trait of Filippis et al read on the limitations of claims 17-19.
The wild-type Solanum pennellii is commercial irrelevant, the cultivar Solanum lycopersicum is commercial relevant. The limitation of claim 20.
Both Solanum pennellii and Solanum lycopersicum belong to genus Solanum. The limitation of claim 21.
Solanum lycopersicum has to the ability to accept pollen. The limitation of claim 24.
Claims 22-23, 25-26 recite limitations of the steps, not the structure of the L1 layer or the periclinal chimera plant. Again, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production.
An invention would have been obvious to one ordinary skill in the art if any teaching, suggestion or motivation in prior art leading the one to combine the teaching(s) or suggestion(s) of the cited references to arrive the claimed invention.
It would have been prima facie obvious to modify the invention of Filippis et al, such that the hybrid (F1 or F2) tomato plant of a wild type and a cultivar of Sharma et al substitutes the wild type tomato plant as the L1 layer of the periclinal plant of Filippis et al, as taught and motivated by Sharma et al. One ordinary skill in the art would have been motivated to do so for the same biotic/resistance traits in the wild type plant and in the selected hybrid plant. The expectation of success would have been high because the hybrid plant had been produced and available and had the same biotic/resistance traits as the wild type plant, as produced and demonstrated by Sharma et al.
Again, the resultant L1 layer and the periclinal plant is analyzed by the structure. Such substitution to achieve essentially the same L1 layer and the periclinal plant, and the same L1 layer and the periclinal plant as instantly claimed.
Therefore, the invention would have been obvious to one ordinary skill in the art.
Claims 27-35 are rejected under 35 U.S.C. 103 as being unpatentable over Filippis et al viewed with evidence from Bolger et al, in view of Sharma et al.
Amended claim 27 is drawn to a periclinal chimera plant comprising an L1, L2 and L3- shoot meristem layer,
wherein the L1-shoot meristem layer is from a first plant comprising a first L1- localized trait of interest and a second L1-localized trait of interest,
wherein the first L1-localized trait of interest is from a wild species comprising the first L1-localized trait of interest and wherein the wild species does not comprise the second L1-localized trait of interest,
wherein the second L1-localized trait of interest is from a cultivar comprising the second L1-localized trait of interest and wherein the cultivar does not comprise the first L1- localized trait of interest,
wherein the first plant is a F1-hybrid or an inbred plant of a cross of the wild species and the cultivar,
wherein the L2- and L3-shoot meristem layers are from a second plant, wherein the second plant does not comprise both the first L1-localized trait of interest and the second L1- localized trait of interest, and
wherein the first and second L1-localized trait of interest are selected from the group consisting of biotic stress resistance, abiotic stress resistance, improved seed germination, fruit color and the ability to accept pollen produced by the second plant or by the plant itself.
Note: except the” biotic stress resistance, abiotic stress resistance, improved seed germination, fruit color and the ability to accept pollen” in L1 layer, the traits in all 3 layers are generic, not specific.
As analyzed above, Filippis et al teach a periclinal chimera plant from grafting a cultivar plant Solanum lycopersicum and a wild-type plant Solanum pennellii (p1039, Abstract; p1046, right col, 3rd para, “EXPERIMENTAL PROCEDURES”).
Filippis et al teach that meristem that L1 layer is from wild-type plant Solanum pennellii, and L2 and L3 layers are from cultivar plant Solanum lycopersicum. L1 layer is the outer layer, L2 and L3 layers are inner layers, for both cultivar and wild-type (p1039, Abstract; p1040, figure 1). Filippis et al teach and demonstrated some traits of L1 layer of the periclinal chimera plant, which has green fruit color trait (p1041, figure 2, far right). Thus, the L1 layer of the periclinal chimera plant of Filippis et al comprises fruit color trait.
Filippis et al also teach and demonstrated that some traits are the same, in cultivar plant, in wide plant, and in the periclinal chimera plant. For example, the L1 layer of cultivar plant, wide plant and periclinal chimera plant all have the same green fruit color trait (p1041, figure 2(c)). The fruit color trait is one of the recited traits. Given that the wild and cultivar plants are not periclinal, and the genes and traits are in L1, L2 and L3 layers, the trait such as green fruit color, are also the same in wild and cultivar plants, although the claim requires “the L2- and L3-shoot meristem layer are from a second plant”.
Filippis et al does not explicitly teach or demonstrate that L1 layer of the periclinal chimera plant comprises biotic or abiotic resistant trait. However, as analyzed above, Filippis et al teach that the L1 layer of the periclinal chimera plant is from wild-type plant Solanum pennellii (p1039, Abstract).
Bolger et al provide evidence that wild-type plant Solanum pennellii comprises genes conferring tolerance/resistance to drought stress (p1036, left col, 1st para; figure 3). Again, wild species plants are not periclinal plants, thus, L1, L2, L3 have the same genotype in wild species plants. Thus, the L1 layer of Solanum pennellii comprises trait resistant to drought stress. Since the L1 layer Solanum pennellii is the L1 layer of the periclinal plant of Filippis et al, which comprises trait resistant to drought stress.
Thus, the L1 layer of the periclinal plant of Filippis et al comprises both a fruit color trait, and a drought resistant trait that is evidenced from Bolger et al.
Filippis et al also meet the requirement of “the second plant (cultivar) does not comprise both the first L1-localized trait of interest and the second L1- localized trait of interest”, because Bolger et al provide evidence that the resistance trait is only in the wild pennellii not in the cultivar lycopersicum (p1034, Abstract).
Accordingly, Filippis et al viewed with evidence from Bolger et al teach all of the claim structures
except
do not teach the newly added limitation wherein the first plant is a F1-hybrid or an inbred plant of the cross of the wild species and the cultivar (the second L1-localized trait is from said cultivar).
Sharma et al teach that disease resistance traits, abiotic stress tolerance traits, and other desirable horticultural and agronomic characteristics, are identified from wild type tomato Solanum pimpinellifolium (p2, right col, 1st and last paras).
Sharma et al teach and demonstrated producing hybrid by crossing wild type tomato Solanum pimpinellifolium and cultivar tomato Solanum lycopersicum, F1 and F2 progenies were produced (p3, left col, 2.1).
Sharma et al teach and demonstrated selecting F2 progenies having desired traits including disease resistant, a specific biotic stress resistance (p3, left col, 2.1; p3, right col, 2.3 p4-5, Table 1).
Thus, the selected F2 progenies of Sharma et al comprise the same biotic stress resistance, which are from the wild type tomato. The hybrid and the wild type would substitute each other as the source of the L1 layer comprising resistance traits in the outer L1 layer. Thus, Sharma et al teach and provide motivation to make such substitution to achieve the same outcome.
Regarding dependent claims, the drought resistant trait and the fruit trait of Filippis et al read on the limitations of claims 28-30.
In Filippis et al, the wild-type Solanum pennellii is commercial irrelevant, the cultivar Solanum lycopersicum is commercial relevant. The limitation of claim 31.
Both Solanum pennellii and Solanum lycopersicum belong to genus Solanum. The limitation of claim 32.
Solanum lycopersicum has to the ability to accept pollen. The limitation of claim 33.
Solanum lycopersicum is the second plant, and a cultivar, the same species and same variety, the limitation of claims 34-35.
An invention would have been obvious to one ordinary skill in the art if any teaching, suggestion or motivation in prior art leading the one to combine the teaching(s) or suggestion(s) of the cited references to arrive the claimed invention. also
It would have been prima facie obvious to modify the invention of Filippis et al, such that the hybrid (F1 or F2) tomato plant of a wild type and a cultivar of Sharma et al substitutes the wild type tomato plant as the L1 layer of the periclinal plant of Filippis et al, as taught and motivated by Sharma et al. One ordinary skill in the art would have been motivated to do so for the same biotic/resistance traits in the wild type plant and in the selected hybrid plant. The expectation of success would have been high because the hybrid plant had been produced, selected and available and had the same biotic/resistance traits as the wild type plant, as produced and demonstrated by Sharma et al.
Again, the resultant L1 layer and the periclinal plant is analyzed by the structure. Such substitution to achieve essentially the same L1 layer and the periclinal plant, and the same L1 layer and the periclinal plant as instantly claimed.
Therefore, the invention would have been obvious to one ordinary skill in the art.
Remarks
For compact prosecution, the following references are relevant to instant application, thus are filed but not cited by the examiner (as in the last office action):
Togami et al (US 8183434, granted and published 5/22/2012; filed 3/28/2008).
Pelsy et al (Chromosome Replacement and Deletion Lead to Clonal Polymorphism of Berry Color in Grapevine. PLOS Genetics, p1-18, 2015).
University of Florida (Report of the Tomato Genetics Cooperative Number 56, 2006).
Response to Arguments
Claim Objections
The objections are withdrawn in view of the claim amendments.
Double Patenting
The terminal disclaimer filed 4/13/2026 has been approved, overcoming the rejection against US Patent 11950553.
Art rejections
102
In view of the claim amendments and the introduced new ground “wherein the first plant is a F1-hybrid or an inbred plant of the cross of the wild species and the cultivar”, in independent claims 16 and 27, the 102 rejections are withdrawn.
Thus, the arguments to the previous 102 rejections are no longer applicable.
103
However, 103 rejections are newly made, citing a new reference, to address the new ground, and the new combination of the claimed structures. The previously cited references are still applied in the rejections.
Conclusion
No claim is allowed.
The applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). The applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
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/Wayne Zhong/
Primary Examiner, Art Unit 1662
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